Appeal No. 2004-2334
Application No. 09/888,145
appellant's claimed novelty item, we are led to the conclusion
that such printed matter is not entitled to patentable weight.
Since, for the reasons stated above, we decline to accord
the printed matter of appellant's novelty item any patentable
weight, it follows that we will sustain the examiner's rejection
of appealed claim 11 under 35 U.S.C. § 103(a). We do so, not
because we agree with the examiner's misguided opinion that it
would have been obvious at the time the invention was made to
print card suit and denomination indicia on the paper strips of
Mueller (answer, page 3), a conclusion for which the examiner has
no factual basis, but because we find that appellant's item
defined in claim 11 lacks novelty with regard to the fortune
cookies found in Mueller. As has been made clear by our
reviewing Courts on numerous occasions, anticipation or lack of
novelty is the ultimate or epitome of obviousness. See, in this
regard, In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641,
644 (CCPA 1974).
We next look to the examiner's rejection of independent
claims 1 and 6 under 35 U.S.C. § 103(a) based on Mueller. These
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